Entries in patent infringement (24)

Friday
Jan102014

Pacific Coast v. Malibu Boats

In 2011, Pacific Coast Marine Windshields Limited (Pacific Coast) brought suit (No. 12-CV-0033) against Malibu Boats, LLC (Malibu) in the Middle District of Florida, alleging infringement of U.S. Patent No. D555,070. The District Court held that Pacific Coast was barred from alleging infringement due to prosecution history estoppel, and Pacific Coast appealed. 

On January 8, 2014, the Federal Circuit held that “the principles of prosecution history estoppel apply to design patents” but reversed the district court’s summary judgment of non-infringement because “the accused infringing design was not within the scope of the subject matter surrendered during prosecution.”

A design patent application filed in 2006 by Darren Bach, CEO of Pacific Coast, depicted various embodiments of the claimed ornamental design for a marine windshield with configurations including zero, two, and four vent holes on a corner post.  In response to a restriction requirement, the applicant elected a group corresponding to a single figure with four vent holes, and canceled the remaining figures.  Mr. Bach later obtained a patent for a divisional of the originally filed application, claiming a windshield with no vent holes.  The application issued as D555,070.

Figure 1 of the ‘070 patent is reproduced below.

The accused infringing design of Malibu Boats is a boat windshield with three trapezoidal holes, as shown below.

The District Court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim.  The District Court’s decision recognized that the accused design had one fewer vent hole but explained that ‘“the accused design is still clearly within the territory [surrendered] between the original claim and amended claim.’”

On appeal, the Federal Circuit noted that the doctrine of prosecution history estoppel is well established for utility patents, but that the concept of prosecution history estoppel as applied to design patents was “one of first impression” for the court.  For utility patents, the doctrine of prosecution history estoppel prevents a patentee from recapturing in an infringement action subject matter which was surrendered during prosecution.

The Federal Circuit noted that “for design patents, the concepts of literal infringement and equivalents infringement are intertwined,” and stated that accordingly “the test for design patent infringement is not identity, but rather sufficient similarity.” Furthermore, the Federal Circuit acknowledged that Pacific Coast had “characterized the substantial similarity between the accused designs and the ‘070 patent as the basis for an infringement claim ‘under the doctrine of equivalents.’” The Federal Circuit concluded that “the principles of prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then addressed the question of whether the prosecution history estoppel barred infringement in this case.

The Court determined that there was a surrender of claim scope during prosecution, and that “by removing broad claim language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”

In addition, the Federal Circuit noted that the claim scope was surrendered to secure the patent, but not to avoid prior art.  Whereas Pacific Coast argued that only surrenders to avoid prior art were within the doctrine, the Federal Circuit cited Festo stating that “the rationale behind prosecution history estoppel ‘does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.’”

With respect to the scope of the surrender, the District Court had determined  that the accused design was within the scope of the surrender, i.e., that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the range between four and zero was abandoned.  In contrast, the Federal Circuit stated that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” The Federal Circuit further noted that “the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.”

Thus, the Federal Circuit held that the prosecution history estoppel principles apply to design patents, but do not bar Pacific Coast’s infringement claim, and remanded for further proceedings.

Friday
Feb152013

Beats sues Yamaha for trade dress and design patent infringement

Beats Electronics, LLC (Beats) filed a complaint against Yamaha Corporation of America (Yamaha) on February 6, 2013, in the Central District of California, alleging infringement of Beats’ design patents and trade dress.  The complaint includes a request that the court enter a judgment that requires Yamaha to deliver to Beats, for destruction, all of the alleged infringing headphones and any materials which depict the alleged infringing headphones.  The complaint demands a jury trial on all issues.

According to the complaint, counsel for Beats notified Yamaha on November 30, 2012, of its belief that the Yamaha Pro 300, Yamaha Pro 400 and Yamaha Pro 500 headphones infringe Beats patents and Beats’ trade dress rights, and the complaint alleges that the Pro 300, Pro 400 and Pro 500 headphones are “knock-offs of Beats’ world-famous ‘Studio,’ ‘Solo,’ and 'Wireless’ model headphones.”

The complaint alleges that Yamaha has “infringed Beats’ famous and distinctive trade dress and committed unfair competition,” and that Yamaha has infringed Beats’ design patents D632,668 and D552,077, which respectively claim an audio listening system and a headphone.

Fig. 8 of D552,077, Fig. 1 of D632,668 and an image of one of the alleged infringing Yamaha headphones from Exhibit E of the complaint are reproduced below, respectively, left to right.

Exhibit F of the complaint, which is titled “BEATS SOLO vs. YAMAHA 300,” is reproduced below.

In the complaint, Beats alleges that “[c]onsumers appreciated the design, as well as the sound quality, of the Beats Headphones and began wearing the Beats Headphones around their necks as a fashion accessory even when not listening to music.” Beats further alleges that “Beats’ Trade Dress rights in these products consists [sic] of the overall appearance of the shape and design of the headphones, including the size, proportion and curvature of the headband, yoke and earcups,” citing to Exhibits A-C of the complaint.

The complaint further alleges that the following images are advertisements that have been displayed by Yamaha or its affiliate on the Internet, and argues that these images “further show Defendant’s intention to copy the distinctive design of Beats’ headphones and/or its intention to trade off of the goodwill associated with Beats’ product appearance.” 

Thursday
May172012

Apple V. Samsung: CAFC Appeal Decision - The Dissent

Further to our prior post concerning the recent CAFC Appeal Decision, on May 14, 2012, the Federal Circuit reversed and remanded the district court’s decision to deny a preliminary injunction to plaintiff Apple for its design patent D504,889 for a tablet.  The Federal Circuit affirmed the district court's decision denying a preliminary injunction with regard to two other design patents and a utility patent drawn to smartphones.

The dissent by circuit Judge O'Malley urged the majority to immediately enter a preliminary injunction for design patent D504,889.  The majority remanded the decision to the district court to complete the analysis of the balance of the hardship factors and the public interest factors, which were only performed for the smartphone patents by the district court.  The dissent argues that these factors favor Apple with respect to the tablet patent D504,889, and that this analysis should not be remanded to the district court, as the delay would further prejudice Apple.  In particular, Judge O'Malley stated on p. 2 of the dissent that:

the majority’s decision to remand this matter for further proceedings relating to the D’889 Patent is unwarranted because: (1) remand will cause unnecessary delay, which is inconsistent with the very purpose of preliminary injunctive relief; and (2) once we reject its validity analysis, the district court’s decision, taken in its entirety, reveals that all of the prerequisites for preliminary injunctive relief are satisfied. Remand is particularly inappropriate where, as here, both this court and the district court agree that Apple will suffer irreparable harm absent injunctive relief. The majority’s decision to remand for further proceedings will only exacerbate that harm.

Judge O'Malley emphasizes that injunctive relief is a "drastic remedy" and "exists for a reason to provide speedy relief from irreparable injury." Although Judge O'Malley acknowledges that the district court did not make any findings with regard to the balance of hardships and the public interest with respect to the tablet patent D504,889, Judge O'Malley argues that the record from the district court is complete and sufficient for determining that an injunction should be entered.  Of note, Judge O'Malley at pp. 11-12 of the dissent states:

As this court has recognized, “[a]lthough the public interest inquiry is not necessarily or always bound to the likelihood of success o[n] the merits, . . . absent any other relevant concerns . . . the public is best served by enforcing patents that are likely valid and infringed.” Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1348 (Fed. Cir. 2006). So too here, because the record at this stage shows that the D’889 Patent is likely valid and infringed, and there are no other relevant concerns, the public interest is best served by granting a preliminary injunction.

Concerning the balance of hardships requirement, Judge O'Malley states at p. 10 of the dissent that the balance of hardships weighs in Apple's favor because it has an interest in enforcing its patent rights.  As we previously noted in our prior post, Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.  Below is an image from Samsung's product page for the Galaxy Tab 2 10.1.

The design of the Samsung Galaxy Tab 2 10.1 is not identical to the Samsung Galaxy Tab 10.1N (see our prior post concerning the "Design Around" in Germany last year).  Since the Samsung Galaxy Tab 2 10.1 appears to be poised as a replacement in the marketplace, the court may view the balance of hardships as weighing further in Apple's favor because Samsung has already "designed around" the tablet patent D504,889 (presuming the Samsung Galaxy Tab 2 10.1 does not infringe the tablet patent D504,889).

Edward Tracy contributed to this post.

Tuesday
May152012

Apple V. Samsung: CAFC Appeal Decision

In December, 2011, Apple appealed Judge Lucy Koh's denial of a preliminary injunction in the pending lawsuit in the U.S. District Court for the Northern District of California with respect to four Apple patents:

D618,677, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D593,087, which is alleged to be infringed by Samsung's Infuse 4G and Galaxy S 4G smartphones;

D504,889, which is alleged to be infringed by Samsung's Galaxy Tab 10.1; and

7,469,381, which is alleged to be infringed by all four products (the three mentioned above and the Droid Charge).

The CAFC ruled on the appeal from the denial of a preliminary injunction on May 14, 2012, providing a mixed bag of results for Apple and Samsung.  This ruling follows oral arguments that took place on April 6, 2012.

As recited in the CAFC ruling on p. 15, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest,” citing to Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).  Also, as stated on pp. 15-16 of the CAFC ruling, "[t]he decision to grant or deny a preliminary injunction lies within the sound discretion of the district court, and we will not reverse its judgment absent an abuse of that discretion," citing to Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375 (Fed. Cir. 2009).

In summary, the CAFC acknowledges the heavy burden on Apple to make the case to convince the district court to grant a preliminary injunction, and the even heavier burden with respect to reversing the district court's decision.

The district court relied on varying rationales for denying a preliminary injunction.  However, a general theme in the opinion was Apple's failure to show irreparable harm (irreparable injury).  In particular, the CAFC affirmed (at least in part) the district court's denial of an injunction based on irreparable harm with respect to the D'667, D'087 and '381 patents. 

However, the CAFC rejected the district court's ruling that D'087 is likely anticipated by JP 1241638 (JP '638).  Specifically, the opinion at p. 22 states, "[w]hen the claimed portion of the side view is taken into account, the differences between the arched, convex front of the ’638 reference distinguish it from the perfectly flat front face of the D’087 patent," providing the following comparison image on p. 23:

Concerning D'889, the district court concluded the irreparable harm requirement had been satisfied, but denied injunctive relief because Apple had failed to establish a likelihood of success on the merits.  The CAFC disagreed with the district court, stating on p. 28 of the ruling that the relied on reference "Fidler" provided "a very different impression from the 'unframed' D'889 design." The following image was provided on p. 28 of the ruling.

Regarding the status of a preliminary injunction based on D'889, a determination as to the balance of hardships and the public interest was remanded to the district court.

There are several important items to take away from the CAFC ruling:

First: The CAFC ruling at pp. 16-17 states: "the district court was correct to require a showing of some causal nexus between Samsung’s infringement and the alleged harm to Apple as part of the showing of irreparable harm." In the context of design patents, where only a portion of a product may be claimed, a nexus may be more difficult to show because consumer demand may be less likely driven by that particular claimed portion of the design, than by the overall design of the product.  Nonetheless, Apple was still able to show the required nexus with respect to the alleged infringement of D'889.

Second: With respect to D'889, the district court may rule in favor of Apple and still grant a preliminary injunction with respect to D'889.  However, this may quickly become a moot issue because Samsung is rolling out the Galaxy Tab 2 10.1, which has a different bezel than the Galaxy Tab 10.1, and appears to be poised as a replacement in the marketplace.

Third: Apple's position concerning patent validity and infringement, at least concerning D'087 and D'889, is stronger.

Fourth: Irreparable harm is a requirement for a preliminary injunction - not for calculating damages and not a clear requirement for an exclusion order from the ITC (see Dennis Crouch's post on this issue at PatentlyO).  Therefore, the lack of irreparable harm (or at least a showing thereof) does not indicate Apple has a weak position for obtaining significant damages or an exclusion order.

Tuesday
May012012

Apple v. Samsung: Settlement Conference

FOSS Patents has published a list of the 50+ pending Apple-Samsung lawsuits spanning the globe.  Although the timely resolution of so many lawsuits may require divine intervention, Judge Lucy Koh (who is presiding over the lawsuits in the Northern District of California) "ordered the parties to comment on their availability for an Alternative Dispute Resolution (ADR) effort," as reported by FOSS Patents.  As a result of Apple's and Samsung's responses, U.S. Magistrate Judge Spero will now preside over a settlement conference on May 21-22, 2012, in San Francisco.